Monday, September 28, 2009

Ten Mistakes In Seeking A U.S. Trademark Registration

Today's post was prepared by my outstanding trademark paralegal, Mollie Roberts.

If you recall the last time one of your trademark applications sailed through the USPTO’s office without a hiccup, you probably wish you could also recall the magic sequence of events you followed to make it so.

I participated in INTA’s Trademark Administrator’s Conference held in Chicago last week, and attended an informative trademark presentation led by Daphne Maravei of Blake Cassels & Graydon in Canada, and former USPTO examiner Christopher Ott, now of Vorys, Sater, Seymour & Pease, LLP, in the United States. I took away the following list of 10 common mistakes that practitioners make when filing U.S. trademark applications with the PTO:

Mistake No. 1 - Inadequate searching

Your search should allow you to substantially answer the following questions with regard to the mark: Can you register it? Use it? Enforce it? Depending on what a knock-out search reveals, a full search may be advisable and, once you obtain your search results, get moving on the application. It is never a good idea to delay a filing once you receive the search results.

Mistake No. 2 - Wrong applicant name

Make sure you are confident that the correct entity is named as the owner/applicant. Double-check records with the secretary of state, where applicable, and don’t forget to simply ask the client. This is particularly true with regard to international filings where inconsistent trademark ownership is more common.

Mistake No. 3 – Inconsistent foreign registrations and U.S. applications

When you file a U.S. application based on a foreign registration, be wary of using a laundry list of goods and services. Rather, verify that each item is in use. Obtain a proper translation, and consider getting the foreign registration before filing in the United States.

Mistake No. 4 – Describing goods and services

Before you attempt to describe the goods and services associated with the mark, be confident that you have a clear understanding of what your client actually does with its mark.

Mistake No. 5 – Is the mark in use?

Establish a check-list of what “in-use” means and go over the list with your client before you file the application.

Mistake No. 6 – Improper specimen or outdated specimen

Educate your client about the importance of specimens. The specimen must be a substantially exact representation of the drawing, so ask for packaging and examples of use, then confirm that the mark is in use with the goods and services listed in the application. Further, ensure that the specimen is current.

Mistake No. 7 – Creative declarations

The USPTO provides a declaration for trademark applications. Use it. Then ask your client to sign it. Attorneys should avoid signing declarations on behalf of clients.

Mistake No. 8 – Unusual situations - Madrid Protocol mishaps

Be wary of using a laundry list of goods and services.
Remember that you cannot amend the mark in a Madrid registration. So, get it right the first time.
Educate yourself about statutory prohibitions.
Review the statute at least once before filing.
Mistake No. 9 – Maintenance filings

Maintenance filings offer an opportunity to correct prior mistakes, update information like client addresses, and prevent future mistakes.

Declarations of use must be filed by the owner of the mark and the mark must be used in the same manner as stated in the registration. If the mark is being used with fewer than all of the goods listed, review 37 C.F.R. § 2.161 to ensure that the proper form of declaration is filed.

Mistake No. 10 – Abandonment

“Use it or lose it” - Educate the client about continued use of the mark.
Licensing - Discuss proper licensing with your client – the licensor must always exercise control over the mark. Implied licenses may not be worth the paper they are (not) printed on.
Enforcement - Educate the client about proper enforcement of the mark so it doesn’t become generic.
Assignment – A mark cannot be assigned without corresponding goodwill.

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